Ex Parte Ichihara

Patent Trial and Appeal Board

Jan 30, 2013

11004814 (P.T.A.B. Jan. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/004,814 12/07/2004 Masaki Ichihara 016891-0874 3833
22428 7590 04/19/2013
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
GONZALEZ, AMANCIO
ART UNIT PAPER NUMBER
2642
MAIL DATE DELIVERY MODE
04/19/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte MASAKI ICHIHARA
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Appeal 2010-009870
Application 11/004,814
Technology Center 2600
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Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2010-009870
Application 11/004,814

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ANALYSIS
Appellant filed a Request for Rehearing on March 29, 2013
(“Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our
Decision on Appeal mailed on January 31, 2013 (“Decision”) affirming the
Examiner’s rejection of claims 1-4, 6-8, 10, 11, 13-19 and 23. We have
reconsidered our Decision, in light of Appellant’s arguments in the Request,
and we are not persuaded that we misapprehended or overlooked any points
in rendering our Decision. We decline to change our prior Decision for the
reasons discussed infra.
Appellant continues to contend that independent claims 1, 8, and 16
are not obvious because the combination of Hall, Granade, and Mahajan
does not disclose the “feature of ‘means for sending a data upload program
to the mobile communication terminal along with the WEB page’" (Request
5). In particular, Appellant argues that the “claimed features of independent
claims 1, 8, and 16 should be accorded patentable weight” (id. at 6).
We are not persuaded, however, that the Examiner erred in concluding that
the claim limitation in dispute is rendered obvious by the combination of
Hall, Granade, and Mahajan. As we previously explained, the Examiner
“reasoned that the combination of references teaches this claim limitation
because Granade discloses that a server uploads ‘a web page to be displayed
on a mobile device’ and Mahajan ‘clearly explains that data upload to a
mobile station is not limited to a single data type, but that other applications
and programs can be uploaded’” (Decision 4 (citations omitted)). As we
further explained, “[i]n response to the Examiner’s reasoning, Appellant
argues that in Mahajan ‘the application programs are not data upload
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Application 11/004,814

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programs, but rather they are ‘games, ring tones, etc.’” (id. (citations
omitted).
We maintain our previous conclusion that Appellant’s arguments
urging patentability are predicated on non-functional descriptive material,
i.e., the data upload program that is sent and received. That is, we conclude
that claims 1, 8, and 16 cannot be distinguished over the prior art on the
ground that they require sending a data upload program instead of the
application program taught by the prior art because the data upload program
is mere non-functional descriptive matter. In other words, sending a data
upload program instead of some other type of program does not affect or
relate to any function recited in the other portions of the claims.
Appellant also continues to contend that independent claims 23 is not
obvious because the prior art does not teach that “the e-mail identifies a
URL to access a WEB page by which the user of the mobile communication
terminal can access the data stored at the server” (Request 9). In particular,
Appellant argues that the “the recited feature is part of the actual function of
the claimed "mobile communication terminal" which includes downloading
data stored on the server, which is part of the utility of the disclosed
invention” (id. at 10).
We maintain our previous conclusion that Appellant’s arguments
urging patentability are predicated on non-functional descriptive material,
i.e., the content of an email. In particular, claim 23 does not require a user to
access data on a server by accessing a WEB page identified by a URL in an
email. It instead merely recites that the URL in the email could be used for
that purpose. In other words, the email recited in claim 23 does not affect or
relate to any function recited in claim 23.
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Application 11/004,814

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Accordingly, Appellant has not persuaded us that we
misapprehended or overlooked any points in rendering our Decision.

DECISION
We have granted Appellant’s request to the extent that we have
reconsidered our Decision, but we deny the request with respect to making
any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

DENIED

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